Appeal No. 1999-1458
Application No. 07/943,812
novel they are not rendered patentable by recitation of properties,
whether or not these properties are shown or suggested in the prior
art.
II. Written Description:
As set forth in UC v. Eli Lilly and Co., 119 F. 3d 1559, 1566, 43 USPQ2d
1398, 1404 (Fed. Cir. 1997) “an adequate written description of a DNA requires
more than a mere statement that it is part of the invention and reference to a
potential method for isolating it; what is required is a description of the DNA
itself.” Furthermore, Lilly 119 F.3d at 1568, 43 USPQ2d at 1406, indicates,
“[a] definition by function … does not suffice to define the genus because it is
only an indication of what the gene does, rather than what it is.” In this regard,
we note, for example, that unlike appellants’ claim 1, wherein the radiation
responsive enhancer-promoter comprises a portion of the Egr-1 or c-jun
promoter, claims 56-59 are broadly drawn to any “isolated and purified DNA
molecule comprising a radiation responsive enhancer promoter.”
Upon return of this application, the examiner should take a step back and
determine whether appellants’ specification provides an adequate written
description of any “isolated and purified DNA molecule comprising a radiation
responsive enhancer promoter” as set forth in claims 56-59.
REVERSED
Sherman D. Winters )
Administrative Patent Judge )
)
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